USPTO Patents Application 10686331

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PRE-APPEAL BRIEF REQUEST FOR REVIEW

Docket Number (Optional)
10991268-3

1 hereby certify that this correspondence is being deposited with the
United States Postal Service with sufficient postage as first class mail
in an envelope addressed to "Mail Stop AF, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450" [37 CFR 1.8(a)]

Application Number

10/686,331

Filed

October 14, 2003

nn February 20, 2008

First Named Inventor

Sinnature /Sarah McLaughlin/

Richard M. Butler

Art Unit

Examiner

Typed or printed

namp Sarah McLaughlin

2193

CI

at C. Do

Applicant requests review of the final rejection in the above-identified application. No amendments are being filed
with this request.

This request is being filed with a notice of appeal.

The review is requested for the reason(s) stated on the attached sheet(s).
Note: No more than five (5) pages may be provided.

□ /Kyle J. Way/

applicant/inventor.

□ assignee of record of the entire interest. kvIp T Wnv
Sep 37 CFR 3.71 . Statement under 37 CFR 3.73(b) i:

(Form PTO/SB/96) Typed or printed name

[*"] attorney or agent of record 720-562-2280
Registration number 45,549 .

Telephone number

| | attorney or agent acting under 37 CFR 1 .34. February 20, 2008

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Practitioner's Docket No. 10991268-3

PATENT

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

In re application of: Richard M. Butler
Application No.: 10/686,331
Filed: 10-14-2003

Confirmation No.: 7201
Group No.: 2193
Examiner: Chat C. Do

For: GENERATION OF CRYPTOGRAPHICALLY STRONG RANDOM NUMBERS
USING MISRS

Mailstop: AF

Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450

Introductory Comments

In response to the advisory action dated February 6, 2008 (hereinafter "the advisory
action"), the Applicant requests review of the final rejection in the above-identified application.
No amendments are being filed with this request. A Notice of Appeal under 37 C.F.R. §
41.31(a)(1) is being filed herewith.

Claims 1-22 remain pending. Claims 4-6 and 19 stand objected to for depending from a
rejected base claim, but are otherwise allowable. (Page 7 of the final Office action dated
November 26, 2007, hereinafter "the final Office action.") Claim 22 is allowed. (Id.) Claims 1-
3, 7-18, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over U.S.
Patent No. 5,757,923 to Koopman, Jr. (hereinafter "Koopman") in view of U.S. Patent No.
5,867,409 to Nozuyama (hereinafter "Nozuyama"). (Page 2 of the final Office action.) The
Applicant respectfully disagrees, and believes such allegations represent clear error in
establishing a prima facie rejection under 35 U.S.C. § 103. The Applicant thus respectfully
requests review of the rejection for at least the following reasons.

PRE-APPEAL BRIEF REQUEST FOR REVIEW

Pre- Appeal Brief Request for Review

Remarks

Independent method claim 1 is reproduced below for convenience, with emphasis
supplied:

1. A method of generating a random number, comprising:

sampling data transmitted over a number of microprocessor buses at inputs of a
number of multiple input shift registers (MISRs) coupled with the number of
microprocessor buses;

generating values within the MISRs based on the sampled data;

retrieving the values from the number of MISRs; and

generating a random number which is based on the values retrieved from the
number of MISRs.

Below is a discussion of Koopman, followed by an analysis of the rejection from the final Office
action, and an analysis of the interpretation of claim 1 presented in the advisory action.

Koopman

Generally, Koopman discloses "a method of generating secret identification numbers
from a random digital data stream. ..." (Column 3, lines 60 and 61.) To that end, Koopman
employs the system 5 of Fig. 1 to generate a plurality of random numbers. (Column 4, lines 63-
65.) More specifically, the system 5 utilizes a chaotic noise source 10, such as a fan, to generate
chaotic noise. (Column 5, lines 1 1-24.) A recording device 15, such as a microphone, records
the chaotic noise and forwards it to a sampler and digitizer 25 of a computer 20. (Column 5,
lines 26-36 and 43-45.) The sampler and digitizer 25 first samples the sound recorded by the
recording device 15 periodically, resulting in a plurality of samples responsive to the chaotic
noise. (Column 5, lines 46-49, 57, and 58.) "Each sample is then digitized by an analog to
digital converter, such that each sample is converted into a digital data set. ..." (Column 5, lines
58-60.) One example of the sampler and digitizer 25 is a computer sound card. (Column 5, lines
61-65.) A microprocessor 35 of the computer 20 then operates on the resulting data set using a
series of algorithmic functions to generate a random number output. (Column 5, line 66, to
column 6, line 5.)

2

Pre- Appeal Brief Request for Review

Analysis of the Rejection in the Final Office Action

In its rejection of claim 1, the final Office action alleges that Koopman teaches "sampling
(e.g. by component 25 in Figure 1) data transmitted over a number of microprocessor buses (e.g.
wherein the recording device 15 has a microprocessor for capturing the chaotic noise source
from component 10) at input of a number of a processed component (e.g. processing component
35 for generating random numbers) coupled with the number of microprocessor buses (e.g.
connecting with the components 25 and 75)...." (Page 2 of the final Office action; emphasis
supplied.)

The Applicant respectfully disagrees with this characterization of Koopman. For one,
Koopman does not teach or suggest that the recording device 15 incorporates a microprocessor
or similar component. In fact, as indicated above, Koopman teaches that the recording device 15
is a microphone, and that the captured chaotic noise transferred from the recording device 15 to
the sampler and digitizer 25 is in an analog format to be sampled, and subsequently digitized, as
noted above. Thus, Koopman does not disclose, and in fact teaches away from, the use of a
microprocessor in the recording device 15.

Moreover, even if a microprocessor could be incorporated in the recording device 15,
Koopman does not teach or suggest that the data from the recording device 15 that is sampled at
the sampler and digitizer 25 is transmitted over a number of microprocessor buses. Despite the
assertion in the final Office action that a number of microprocessor buses connect with the
recording device 15 and the sampler and digitizer 25, Koopman instead indicates that the
recording device 15 is a microphone, and that the data received at the sampler and digitizer 25 is
analog data that is sampled and digitized by way of an analog-to-digital converter, as noted
above. Thus, Koopman does not teach or suggest, and instead teaches away from, one or more
microprocessor buses connecting with the recording device 15 discussed therein. Thus, the data
being sampled at the sampler and digitizer 25 is not data transmitted over a number of
microprocessor buses, as provided in claim 1. Therefore, for at least these reasons, the Applicant
contends that Koopman does not teach or suggest this provision of claim 1, and such indication
is respectfully requested.

3

Pre- Appeal Brief Request for Review

Analysis of the Interpretation of Claim 1 in the Advisory Action

In response to the arguments presented above, the advisory action states that "[b]ased on
the current [claim] language, the examiner had reasonably and broadly interpreted the above
feature / ''sampling data transmitted over a number of microprocessor buses at inputs of a
number of multiple input shift registers (MISRs) coupled with the number of microprocessor
buses "] as a sampling device [that] is sampling any data to/from or over a device to input digital
data to MISRs wherein the device has a microprocessor as for capturing the noise source and
the buses are the buses for transferring the captured noise sources to the MISRs." (Continuation
sheet of the advisory action; emphasis supplied.) In other words, the advisory action appears to
interpret claim 1 as disclosing a sampling device for sampling any data from anywhere. Further,
the advisory action indicates that such a device has a microprocessor, wherein a bus of the
microprocessor is used to transfer the previously-captured samples to the MISR. The Applicant
respectfully asserts that this interpretation of claim 1 presented in the advisory action is
incompatible with the language of the claim.

As set forth in claim 1, the data that is transmitted over a number of microprocessor buses
is the data which is being sampled, and thus is not data that has already been sampled from some
other source. Furthermore, the sampling operation of claim 1 occurs at inputs of a number of
MISRs coupled with the number of microprocessor buses. In one example, the MISR performs
the sampling of the data being transmitted over the microprocessor bus. Values based on the
sampled data are then generated within the MISR, and retrieved therefrom. A random number is
then generated based on the retrieved values. Thus, the Applicant respectfully asserts that the
interpretation of claim 1 presented in the advisory action is incompatible with the language of
that claim, and thus is not a reasonable reading thereof.

Therefore, based on the discussion presented above, the Applicant contends that claim 1
is allowable in view of the combination of Koopman and Nozuyama, and such indication is
respectfully requested.

Claims 2-21 depend from independent claim 1, thus incorporating the provisions of that
claim. Thus, the Applicant asserts that claims 2-21 are allowable in their present form for at
least the reasons presented above in support of claim 1, and such indication is respectfully
requested.

4

Pre- Appeal Brief Request for Review

Conclusion

Based on the above remarks, the Applicant respectfully requests reversal of the 35 U.S.C.
§ 103 rejection of claims 1-3, 7-18, 20, and 21.

The Applicant hereby authorizes the Office to charge Deposit Account No. 08-2025 the
appropriate fee under 37 C.F.R. § 41.20(b)(1) for the Notice of Appeal filed herewith. The
Applicant believes no additional fees are due with respect to this filing. However, should the
Office determine additional fees are necessary, the Office is authorized to charge Deposit
Account No. 08-2025 accordingly.

Respectfully submitted,

Date: 2/20/2008 /Kyle J. Way/

SIGNATURE OF PRACTITIONER

Kyle J. Way, Reg. No. 45,549
Setter Roche LLP
Telephone: (720) 562-2280
E-mail: kyle@setterroche.com

Correspondence address: CUSTOMER NO. 022879

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400

5

Pre- Appeal Brief Request for Review